DETAILED ACTION
The Amendment filed 08/06/26 has been entered. Claims 1-11 are still pending. Despite the claim amendments and Applicant’s arguments, the 112 rejections are largely maintained, and the 103 rejection is maintained as well as detailed below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
All pending claims are rejected because the last limitation of claims 1 and 8 is that the isolator member is “selected from rubbers having different durometers depending on the weight of the rooftop mounted equipment.” The claim has already recited that the isolator member is made (at least partially) of rubber, but this additional limitation makes it unclear what else is required – if the material is “selected from” various rubbers, does that further limit the claim, and if so, it is unclear how. Also, the limitation makes it seem like a given rubber would have a different durometer based on the weight of some external, unclaimed component, which further renders the scope of this limitation vague/indefinite.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Burke in view of Urievich
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burke (U.S. Patent No. 3,251,076) in view of Urievich (WO 2011/133126) (cited by Applicant). Burke is directed to an impact absorbing mat. See Abstract. Urievich is directed to a vibration-isolating fixing means for a floor. See Abstract.
Claim 1: Burke discloses a vibration isolation assembly [Figs. 6-17] for rooftop mounted equipment [note: capable of being used for this intended use] comprising a support member (A1) having a top wall (100) adapted to engage a piece of lumber or other dunnage material [note: intended use] and a bottom wall having a plurality of openings (124 of A1), and an isolator member (B1) made of a resilient material having a base (bottom of B1) and a plurality of posts (102) adapted to engage and fit into the plurality of openings of the support. See Figs. 6-8, 11.
Burke discloses all the limitations except for the specific material choice of rubber. Urievich discloses a vibration-isolating assembly with a support member (1), an isolator member (2) with a base (3), wherein the isolator member is made of rubber [see para. 0009], selected from rubbers having different durometers depending on the weight of some other non-claimed component [see 112 rejection above]. See Fig. 3; para. 0009. It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to use rubber because Burke explicitly states that the isolator member is a “resilient” material capable of “elastic deformation,” and rubber is an inexpensive and readily available material that meets these requirements.
Claim 2: Burke discloses that the support member is also made of a resilient material, and with the modification due to Urievich, it ‘d be made of rubber. See Figs. 6-8, 11.
Claim 3: Urievich discloses that the support member and the isolator member are made of a thermoplastic elastomer. See para. 0009.
Claim 4: Urievich discloses that the support comprises the top wall, the bottom wall, a first side, a second side, a first end, a second end, and at least one flap for fastening the support to the lumber or other dunnage material. See Fig. 3.
Claim 5: Urievich discloses that the support includes two flaps. See Fig. 3.
Claim 6: It would be obvious to a person of ordinary skill in the art at the effective filing date of the invention for the specific size of the openings to be 3”-5” because it depends on the use of the assembly, using larger posts/openings based on the component(s) it is intended to support.
Claim 7: Burke discloses that the plurality of openings are arranged in rows and are circular and the plurality of posts are arranged in rows and are conical. See Figs. 6-8, 11.
Claim 8: see claims 1 and 5 above. In addition, Urievich discloses that the flap on each side of the top wall could be used for fastening the support member to the lumber or other dunnage material. See Fig. 3 (via holes 4, 5).
Claim 9: see claim 6 above.
Claim 10: see claim 3.
Claim 11: see claim 7 above.
Response to Arguments
Applicant's arguments filed 08/06/26 have been fully considered but they are not persuasive.
Applicant has further added an intended use to the preamble of the independent claims – a vibration isolation assembly “for rooftop mounted equipment” – and asserts this is sufficient to overcome the Burke reference. Applicant also argues that the previously cited language “adapted to engage a piece of lumber” is a structural limitation, that is allegedly afforded patentable weight despite being an intended use. See Remarks, page 7. First, the phrase “rooftop mounted equipment” is incredibly broad. The claims are directed to an isolation assembly for equipment that is mounted on a roof of what exactly – a roof of a vehicle, a roof of a home, or some other structure? Second, Burke is directed to a vibration isolating assembly for “impact cushioning or absorbing devices,” in particular “impact cushioning mats,” which are certainly capable of being used on the roof of some vehicle or structure. So long as the Burke assembly is capable of being used in this fashion, it meets the requirement of the intended use limitation recited in the preamble. See MPEP 2111.02(II); see, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (“[t]o satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”). In the same respect, the Burke assembly is certainly capable of “engag[ing] a piece of lumber,” or any other solid body for that matter.
Applicant also argues that Urievich does not disclose a rubber “selected from rubbers having different durometers depending on the weight of the rooftop mounted equipment.” See Remarks, page 7. First, this limitation renders the claim indefinite since it appears to recite that there is more than one durometer for a specific formulated rubber, as if it varies depending on the equipment mounted on it. The limitation that the rubber is “selected from rubbers having different durometers” does not clearly limit the type of rubber that is being claimed here. Applicant’s argument is essentially a conclusory statement, which is not persuasive. Thus, all rejections are maintained as detailed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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VISHAL SAHNI
Primary Examiner
Art Unit 3657
/VISHAL R SAHNI/Primary Examiner, Art Unit 3616 August 21, 2026
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